In re Beineke
Case #: 2011-1460
Dyk, Schall, Reyna
Full Text Opinion: http://scholar.google.com/scholar_case?q=In+re+Walter+F.+BEINEKE&hl=en&as_sdt=2,38&case=13445076422935056150&scilh=0
Patents: An accidental seedlings discovery is not the product of the human inventive faculty.
Opinion (Dyk): Walter Beineke (“Beineke”) appealed the Board of Patent Appeals and Interferences (“Board”) affirmation of the examiner’s rejection of his two plant patents under 35 U.S.C. § 161. Beineke found two oak trees with superior genetic traits and planted acorns from each tree, observed the progeny, continued to asexually reproduce the trees, then later concluded he had discovered two new and distinct varieties which he attempted to patent. The examiner rejected his claims because the trees were found in an uncultivated state, and the § 161 statute requires cultivation. The Board affirmed the rejections on appeal, ruling the original trees had not been planted by a human being, hence no sufficient cultivation. Beineke continued to contend some level of human cultivation. The Court examined the language of the statute in the context of its contemporary legal intent, and found that patents must be products of human inventive faculties, and could not be granted for naked discoveries. Additionally, the Court applied the “newly found seedlings” language from § 161, which allows for patents on newly discovered plants created accidentally as a by-product of human cultivation. Therefore, regardless of the level of cultivation, because Beineke did not discover seedlings the Board correctly determined that the mature oak trees were not entitled to plant patents. The Board was AFFIRMED.